Q & A with Michael Muczynski

Michael Muczynski is a partner at Marshall Gerstein & Borun. He’s been practicing for 11 years with experience in both IP litigation and patent prosecution. His focus is on pharmaceuticals and other chemical industries.

What do you find the most interesting about your practice?

I really enjoy solving problems. Ever since I was a kid, I’ve liked to take things apart to figure out how they work, and then fix them or improve them. So, for me, the most interesting parts of my practice are the big challenges. I like to find a way to get something done when others think that it’s impossible. Often, that means digging into the facts to develop an argument for patentability of an invention that really convinces the Patent Office. Another side to the coin is in preventing problems. So, for example, I like thinking steps ahead like in a chess game when drafting a patent application to find all the ways it might be attacked during prosecution or enforcement, and then eliminate those problems or build in defenses.

What makes a good lawyer?

I think a good patent lawyer has to have a combination of three essential qualities. First, is a good technical education and solid understanding of the science involved in the invention. The clients and inventors we work with really do a great job of explaining their inventions to us, but without having the appropriate technical base to build upon so many opportunities could be lost. I know that we add value to protecting and enforcing inventions, for example, by being able to collaborate with inventors to improve the breadth of a patent application and spot weaknesses. Second, is a thorough understanding of the law, and taking the time to keep up with developments in case law. A good lawyer is also a legal scholar. Third, is the ability to creatively combine the technical aspects of the issues we’re faced with and the principles of law to find solutions for our clients that improve their bottom line.

What is the biggest legal news right now, and what is its impact?

There are two big legal issue in the news right now that will affect our clients. First is the Supreme Court’s decision to review the the Bilski v. Doll decision from the Court of Appeals for the Federal Circuit. The issue there is whether method inventions need to be associated with a machine or some transformation of matter in order to be patent-eligible subject matter. The invention at issue is a so-called “business method” that involves a series of steps for hedging risk in commodities trading, but the decision will have implications for many other industries such as software and even biotechnology. For example, under one legal theory a method of diagnosing a disease would not be patent-eligible subject matter because the novel step would involve a mental step of correlation (e.g., between a discovered property and a patient’s blood test results). The inability to patent such an invention removes the financial incentive for doing that kind of research. This could be a serious detriment to cancer treatment, for example, where early detection can make the difference in patient survival.

The second issue is the debate in Congress about so-called “follow-on biologics,” or generic versions of biotechnology drugs (drugs produced using living organisms). Congress will need to balance the the economic advantages of allowing generic biologics with incentives to biotechnology companies for continuing to develop new therapies, while at the same time taking into consideration unique safety and efficacy considerations involved with generic biologics.